B&B Hardware v. Hargis: Decision and Impact on Trademark Prosecution and Enforcement
The U.S. Supreme Court in March 2015 has delivered a significant decision in B&B Hardware, Inc. v. Hargis Industries, Inc. The Court affirms that the Trademark Trial and Appeal Board (TTAB) rulings on the likelihood of confusion of trademarks may have a binding, preclusive effect on later Federal Court trademark infringement proceedings so long as the ordinary elements of issue preclusion are met, and the usages adjudicated by the TTAB are materially the same as those before a district court.
This case could substantially impact not only trademark enforcement strategies, but also the clearance of trademarks and prosecution strategies before the United States Patent and Trademark Office (USPTO).
In this two-hour LIVE Webcast, a panel of key thought leaders and practitioners assembled by The Knowledge Group will review the B&B Hardware v. Hargis case and will explain the significance and possible repercussions of the rulings and how brand owners can safeguard their trademarks in the future. Speakers will also provide best practices in developing and implementing effective trademark protection strategies to protect against infringement.
Key issues that will be covered in this course are:
- B&B Hardware, Inc. v. Hargis Industries, Inc.
- Trademark Trial and Appeal Board (TTAB) Rulings
- Preclusive Effect: An Overview
- Coverage and Limitation
- U.S. Trademark Application
- Likelihood of Confusion
- Changes and Implications for Practitioners
- Risks and Pitfalls in Trademarks
- Infringement Mitigation Strategies
Damias A. Wilson, Attorney
Cullen and Dykman
- Deference before B&B Hardware
- Chevron deference and the traditional extent to which agency decisions are binding on federal courts.
- TTAB decisions are treated with limited deference. Explain the reasoning used in court decisions for ignoring TTAB holdings on key issues such as likelihood of confusion, strength of a mark, and fraud.
- B&B Hardware and where it is relevant
- Explain the holding in B&B Hardware: where it matters (infringement litigation after a decision is rendered by the TTAB) and its limitations (e.g., TTAB only entitled to deference in cases where the facts underlying the TTAB proceeding are the same as the facts underlying the litigation).
- Explore key issues where TTAB and Federal Circuit precedent differs from other circuits.
- How does B&B Hardware affect clients today?
- Explain the options that are available for appeal or review of a TTAB decision (“After the TTAB decides whether to register the mark, a party can seek review in the U.S. Court of Appeals for the Federal Circuit, or it can file a new action in district court. In district court, the parties can conduct additional discovery and the judge resolves registration de novo.” B&B Hardware, at 1301.).
- Discuss the decision making process for determining whether to bring a TTAB proceeding or a civil action, with a focus on the limitations of TTAB authority. Discuss the pros and cons of moving to suspend a TTAB proceeding pending the outcome of an action in federal court.
James R. Hastings, Of Counsel
- How to manage trademark enforcement and litigation budgets after B&B Hardware
- Early risk assessment techniques for trademark opposition cases in light of B&B Hardware
- TTAB Accelerated Case Resolution (ACR) and Alternative Dispute Resolution (ADR) alternatives
Who Should Attend:
- Private Counsel
- In-House Counsel
- General Counsel
- IP Attorneys and Consultants
- Senior Management
- Trademark Lawyers
- Other Related/Interested Professionals
As an associate at Cullen and Dykman LLP, Mr. Wilson’s practice involves counseling clients from a wide range of industries on a variety of trademark, copyright, and trade secret matters. These matters include due diligence searches and advice on the selection and development of trademarks and trade names; prosecuting trademark applications and recording copyright registrations; developing internal policies and procedures regarding the protection and use of intellectual property; drafting coexistence and consent agreements, trademark and copyright licenses, IP security agreements, and confidentiality agreements; and enforcing and defending intellectual property rights in opposition and cancellation proceedings before the Trademark Trial and Appeal Board, UDRP and URS domain name dispute resolution, and civil litigation.
As an associate at Cullen and Dykman LLP, Mr. Wilson’s practice involves counseling clients from a wide range of industries …
James Hastings is Of Counsel to Collen IP. He is the author of the online publication, Trademark Opposition Lawyer, a helpful primer for brand owners and companies who are seeking to protect their trademark in contested proceedings before the U.S. Trademark Trial and Appeal Board. James’s insight on trademark opposition cases has been featured in Corporate Counsel and the LXBN network of legal publications. James is an approved mediator of the International Trademark Association (INTA) Panel of Mediators, an alternative dispute resolution forum with approximately 150 mediators worldwide that works on behalf of INTA’s 6,500 member companies.
James Hastings is Of Counsel to Collen IP. He is the author of the online publication, Trademark Opposition Lawyer, a helpful primer for …
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About Cullen and Dykman
Cullen and Dykman’s Intellectual Property attorneys regularly advise and represent clients on trademark and copyright issues. In addition to responding to the day-to-day trademark and copyright issues raised by our clients, such as advice on permissible website and social media content, domain name acquisition, and preparing and responding to cease and desist letters, this practice group is regularly involved in the prosecution of trademark registrations at the state and federal levels The Firm’s Intellectual Property group also handles administrative proceedings before the TTAB, domain name dispute resolution, and state and federal district court trademark, copyright, and unfair competition litigation. As a registered agent with the Trademark Clearinghouse, the Firm also assists its clients with the registration of their trademarks with the Clearinghouse. Such registration enables clients to secure new generic top level domains (“gTLDs”) on the Internet before these domains become available to the general public.
About Collen IP
Collen IP is a leading intellectual property law firm and business consultancy that advises and represents the interests of corporations and legal associates worldwide. The firm is recognized for its successes in launching brands, advising on marketing strategies, and protecting valuable intellectual property rights. Collen IP’s litigation team represents clients in a wide array of contested intellectual property proceedings in U.S. District Court, the U.S. Trademark Trial and Appeal Board, and domain name dispute proceedings before arbitration tribunals worldwide. It is recognized each year for having one of the most extensive dockets for trademark opposition and cancellation proceedings before the TTAB , and its lawyers have been featured in various national legal and business publications.